Is Google Winning the Battle in Key Words Advertising Litigation?

Google may have won the battle in Europe in regards to allowing advertisers to purchase trademarks as key words in their Google Ads program. Recently, the highest court in France found Google not liable for trademark infringement in the Google vs. LVMH case and referred the case back to the France Court of Appeals.

Previously, the lower court ruled Google was liable for trademark infringement for this practice. I previously wrote about this practice here. Basically Google allows a competitor of a company with a well established trademark like "Catepillar", to purchase the trademarked "Catepillar" as a key word. When a search is executed for the competitor company on Google, the competitor's link may show up before "Catepillar's" own link. Doesn't sound fair, does it? Many companies have either complained or sued Google for this practice and the courts have been split. In the U.S. one circuit agrees it is trademark infringement, while another circuit disagrees. However, in Europe, Google seemed to be having a harder time defending this practice as the courts have pretty much sided with the trademark owners.

The French lower court concluded a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products. I previously covered this ruling here. However, the higher court disagreed.

Where does this leave Google? Well Google feels like this decision was in their favor and believes and I quote "All cases which get ruled upon by the French Supreme Court go back to the French Court of Appeal as matter of course," Ben Novick, a Google spokesman said. Google further argues, "The French Court of Appeal will need to apply the law as laid down by the Cour de Cassation today. The Cour de Cassation has ruled that Google is not guilty of trade mark infringement, unfair competition or misleading advertising. All else is 'ifs' and 'buts."

However, LVMH feels differently. They welcome the case being remanded to the Court of Appeals and believes the French Court of Appeals "will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization. The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton"

It will be an interesting outcome.

Google's Policy for Keyword Advertising: Beyond the U.S.

Hello!

Welcome Back! In my previous post I discussed Google's Policy for Keyword Advertising. Specifically, I discussed how Google's Policy was different in the US, Canada, UK, and Ireland than in countries outside of these territories. Why? Well it depends on how "trademark owner" friendly laws are in certain countries.  Below I will discuss some "trademark owner" friendly laws in France and Austria.

In France, one court found Google liable for trademark infringement in allowing trademarks to be used a keywords by Google Advertisers.  Viaticum & Luteciel v. Google France, Court of Nanterre, Oct. 13, 2003.  The court conluded that a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products.  

In Austria, the court found that use of trademarks in keyword advertising is trademark infringement.  The court concluded that infringement existed when the search resulted in the competitor's or infringer's advertisement appearing before the trademark owner's advertisement.   Also if the trademark owner's trademark appeared in the text of the advertisement, then trademark infringement existed.   AdWord-Urteil aus Osterreich OGH, Beschluss vom 20.3.2007

So what is the final conclusion? As I have previously stated, advertisers should be overly cautious in deciding to use trademark as keywords in advertising. Depending on the country or the region in the US, you may be liable for trademark infringement.

Google's Policy for Keyword Advertising

Hello!

I hope all is well! In my last post I briefly mentioned Google's Policy on their advertisers' use of trademarks as key words in key word searches that produce advertisements.  Specifically, I mentioned that Google has established a policy in which Google will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further.  Google will implement this policy when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger.  I do need to clairfy that this policy applies to countries outside of the UK, Ireland, Canada, and the US.  See Google's Policy here.

However, in the UK, Ireland, Canada and US, Google's policy is different.  Google will remove the trademark as a keyword only when the trademark is displayed in the ad title or in the ad text.  But it will not completely disable the use of the trademark as a keyword.  View this policy here. 

Below is an example:

In the U.S, if I have a company that is a competitor of John Deere, I can purchase John Deere, which is a trademark, as a keyword.  A search for John Deere will also pull up advertisements for my company.  My advertisement can be just as prominent or more prominent than John Deere's. Of course this can be frustrating for John Deere.  But as long as John Deere, which is a trademark, does not appear in my ad title or text, Google will not require I stop using John Deere as a keyword.  Google will allow this even if John Deere complains.  But outside of the UK, US, Ireland, and Canada, if John Deere complains about the use of its keyword in my advertising campaign, Google will require that I stop using the keyword and prevent me from using it further.   Even though the trademark, John Deere, does not appear in my ad text or title, Google will prevent me from using it as a keyword.  Why is Google's policy different for the US, Canada, Ireland, and the UK?  Well it mainly comes down to how strong the trademark laws are in a particular country regarding the use of trademarks as keywords.

As I mentioned in my previous post, Google has been sued many times for its policy here in the US.  However, Google has either settled each lawsuit or the lawsuit was dismissed for a variety of reasons.  The second circuit has concluded that the use of keywords in advertising is not a use in commerce and therefore not trademark infringement. Read my synopsis of this case here.  On the other hand, the 11th circuit has said the use of keywords in advertising is a use in commerce and therefore trademark infringement.  Other courts in the US, have not been clear whether using trademarks as keywords is trademark infringement. Ultimately this issue is still up in the air and will have to be decided by a higher court.  

Since the courts are pretty much split regarding this issue, Google is not motivated to do more to stop advertisers from using trademarks as keywords in an advertising campaign. Google's policy here in the U.S. is definitely more advertiser friendly. I still stand by my policy to not use trademarks as keywords if you are an advertiser.  The search engine may not be liable for allowing you to use the trademark has a keyword, but you will as an advertiser. 

In my next post, I will discuss some of the laws established in countries where Google's policy is more trademark owner friendly.

I hope this information was helpful.  As always leave a comment or contact me via email if you have any further questions.

Can Search Engines be Contributorily Liable for Trademark Infringement?

Hello!

Today's topic is contributory liability in regards to trademark infringement, i.e, contributory infringement.  Of course, we are going to discuss this trend as it applies to the Internet. First let me explain what is contributory infringement.

Contributory infringement is a legal concept that is usually applied to copyright infringement. Contributory infringement is when an individual or entity knows that copyright infringement is taking place by another and allows, causes, or assists the infringing activity.  Here is an example:  

A manufacturer unlawfully copies an artist's work and sells it to a major retail chain.  The retail chain sells the works in all of its stores.  The artist notifies the retail chain of the infringement and requests that they stop selling the infringing work.  However, the retailer continues to sell the infringing work.  The retailer would be liable for contributory infringement because they had notice the work in question was infringing and they induced or allowed the manufacturer to commit copyright infringement through selling the work.  

Recently, courts have applied the contributory infringement concept to trademark law.  The current law states that "If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit."  Inwood Laboratories, Inc. v. Ives Laboratories, Inc.  Strong language!  

How does this rule apply to search engines?  Specifically, can a search engine be liable for allowing trademarks to be used in keyword searches that result in the advertisement of the trademark by a trademark infringer?  This practice is called key-word linked advertising.  I briefly discussed this concept in my earlier post.  Google has come under fire for this practice.  They have been sued many times.  However the lawsuits were either settled or dismissed.  As a result, Google has established a good policy to avoid contributory trademark infringement liability.  Essentially when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger, they will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further.   Thus Google is adhering to the law established in Inwood Laborities...not knowingly contributing to trademark infringement.

What does this mean for consumers who advertise on the Internet? Don't use established trademark has key words when advertising.  If you sell designer purses, use "designer purses" as a key word  instead of "Louis Vuitton" or "Chanel."  This simple practice will save you a lot of heartache and money.